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Clear, practical IP advice

A vast network of professionals with expertise across a wide range of technologies

Universities and research organisations face many IP challenges. Technology transfer teams have to consider how to efficiently use public money, how to secure and use funding and how to juggle research priorities with the IP process. Ultimately, they need to make sure their intellectual property is attractive as an out-licensing option. We will work hand-in-glove with you to capture, protect, defend and maximise the value of your IP, with a focus on your commercial ambitions.

Technical and sector expertise

We select people with precisely the right combination of legal and technical expertise for your project. At Marks & Clerk we have a vast network of professionals with expertise across a wide range of technology areas. So, whether your research is in AI, molecular biology, 3D printing, blockchain or just about any other technology, we’ll have someone on our team with a deep understanding of that field of research.

Specialists

for the result you need

Paul Chapman

Partner Chartered (UK) and European Patent Attorney
Paul is a Chartered (UK) and European Patent Attorney with over 20 years of experience in the IP profession.

Gianfranco Matteucci

Partner Registered (SG), Italian Patent and European Patent, Italian and European Trade Mark Attorney
Gianfranco is a registered Singapore patent attorney and has passed the European and Italian Patent Attorney qualifying examinations.

James Kinnaird

Partner Registered (SG), Chartered (UK) and European Patent Attorney
James Kinnaird trained as an organic chemist and received his Batchelor’s degree in Chemistry from Glasgow University and his PhD degree from Cambridge University.

Michael Moore

Partner Solicitor (UK)
Michael advises clients on the commercialisation, monetisation and enforcement of intellectual property assets. He advises across a broad range of sectors including electronics, life sciences, transport and energy and has a strong interest in emerging technologies including AI and Additive Manufacturing.

Expertise that exactly meets your needs

Cost-effective strategies for commercially valuable IP

Multidisciplinary teams

Our experts often work together, combining their knowledge as they collaborate on innovations created using more than one technology. We’re exceptional in the world of IP for being able to pull together a team whose expertise exactly meets your needs, regardless of how new or rare the technologies.

Cost effectiveness

We know that it’s vitally important to use IP budgets wisely and so we provide value for money in practical, transparent ways:

  • We don’t charge for ad hoc advice conversations.
  • We structure our teams to ensure that matters are handled by attorneys at the appropriate level.
  • We have highly specialised support teams that handle administrative matters for little or no cost - never applying an attorney hourly rate.

Most importantly, our approach is based on investing in IP only when appropriate and required. We will tell you when filing a new patent application may not be the best option and discuss other ways of protecting your IP.

Our annual forecasts of the amount and the timing of expenditure give you more certainty around budgets allowing you to plan more effectively. We are also highly experienced in providing cost-effective filing strategies to obtain commercially valuable IP within strict budgets.

Complete IP service

With Marks & Clerk, you can get all the intellectual property services you need. In addition to supporting you with patent and trade mark issues, we have a team of commercial lawyers and IP litigators.

Industry partners and investors are critical in developing university-derived innovations and helping fund the cost of IP. We provide support and advice on IP assignments and commercial arrangements between entities. Our extensive experience in advising on research agreements between academia and industry includes:

  • secondment and PhD sponsorship agreements
  • technology transfer from industry via licensing and spin-out companies
  • strategic multi-party collaborations, including those benefiting from grant funding under schemes such as SPRINT and FP7 from the European Union
  • business sale agreements
  • allocation of roles and liability under the project
  • licensing-in of background IP
  • drafting and prosecuting patent applications with future licensees in mind
  • licence agreements, including with complex provisions relating to allocations of field and royalty structures
  • ownership and exploitation of foreground IP
  • accommodating opensource software
  • compliance with grant terms
  • project oversight (for example, through steering committees)
  • avoiding competition law problems
  • databases and the licensing of data (including the implications of doing so using the cloud)
  • IP-related competition law issues, such as compliance with technology transfer and R&D block exemptions, involving specialist counsel if necessary.

Latest Insights

Insight
- 28 July 2021

Sky v SkyKick: SkyKicked into touch

The Court of Appeal finds that a broad specification is not necessarily grounds for invalidity.

On 26 July 2021, the UK Court of Appeal issued its judgment in the long-running trade mark battle between Sky and SkyKick. This has been one of the most eagerly awaited decisions for brand owners in the last few years. The Court of Appeal has reversed the decision of the High Court that Sky’s trade marks were invalid on the ground of bad faith because the specifications were too broad. This is a decision that is likely to be welcomed by many brand owners but as we discuss below does potentially contribute to the issue of cluttering of the register especially in certain classes.
Read more
Insight
- 21 July 2021

A needed boost for innovation in the UK?

Yesterday (20th July 2021), the UK government opened up its new £375 million scheme designed to drive investment in innovative UK firms.
Read more
Insight
- 20 July 2021

© AI and IoT: Canadian Consultation

The goal of this consultation is to ensure that Canada's copyright framework for AI and IoT reflects the rapid advancements in digital technology.
Read more

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